INTA Daily News

Anne Gundelfinger will be a familiar face to many Annual Meeting attendees. An INTA veteran, she has previously served as Vice-President, Secretary, and, in 1999, chair of the Annual Meeting. She has also sat on many INTA committees and subcommittees, including the Federal Trademark Dilution Act Select Committee, the International Amicus Subcommittee, the Anti-Counterfeiting and Enforcement Committee and the Internet Subcommittee.

Gundelfinger is associate general counsel for Intel – a company, she says, that has “figured out innovative mar-keting.” At Intel her work covers trademarks and brands, as well as advertising, marketing and antitrust issues. She is also an enthusiastic traveler, whether for work or pleas-ure. Last year, she and her husband spent three weeks in Provence on a French language course, to improve their speaking skills. She says: “I can do more than just order off the menu now.” 

From the FTC to Intel 

Gundelfinger started her career not in trademark law but in antitrust, working as a staff attorney in the Bureau of Competition at the Federal Trade Commission (FTC) in Washington DC. 

Her first involvement in IP law came while at law school, studying at the Boston University School of Law, when she spent the summers working in copyright and software protection, inspired by the epochal book on the computing industry, Tracy Kidder’s Soul of a New Machine. 

After two years at the FTC, Gundelfinger went to the leading Silicon Valley firm Fenwick & West where she worked in trademark, competition and advertising law. In 1992 she joined Sun Microsystems as associate general counsel and director, before moving to Intel Corporation in Santa Clara, California. 

Ingredient branding 

Gundelfinger joined Intel in 1997, as the company was developing its revolutionary ingredient branding strategy. 

The strategy, dating back to the early 1990s, was designed to market processors directly to consumers. “What attracted me to Intel was that it was a high-tech company with a consumer brand,” says Gundelfinger. “When I joined, the company had figured out that it had a very valuable consumer brand – but it hadn’t taken steps to protect that brand at the time.” Her work in orchestrating brand protection over the past eight years has contributed to its success. The strategy had several prongs: most strikingly, Intel’s products were given distinctive names, such as PENTIUM, PENTIUM PLUS and CENTRINO, rather than numbers (such as 386 and 486) that had been difficult to differentiate from competitors. 

Second, the INTEL INSIDE idea and logo were born. Under a cooperative branding and advertising program, computer manufacturers agree to promote Intel’s processors on the computers themselves, the packaging and advertising – using the INTEL INSIDE logo. Intel has long-term agreements with manufacturers which are set in stone, though the terms and conditions are reviewed annually, whereby the company reimburses manufacturers for any advertising that features its logo. The strategy has made Intel a model for many rival brand owners. “Any trademark attorney will tell you: we want to do what Intel Inside are doing. That’s fine – but you have to be prepared to pay.” 

The success of Intel’s branding strategy has made it the world’s fifth most valuable brand, worth nearly $35 billion last year, according to Interbrand’s annual ranking, and it is one of only a handful of computer industry brands, alongside Microsoft and Apple, which has chimed with consumers. Strikingly, customers want to buy products with Intel processors, even though they will never see the processor itself. 

In all, Intel has about 9,000 trademark registrations and applications worldwide to protect the names, logos and the familiar jingle associated with INTEL INSIDE: the tune was created for, and is owned by, the company. “Most leading developed countries are willing to protect the sound mark if you can prove secondary meaning – and where trademark law has not provided much protection, we’ve relied on copyright,” says Gundelfinger. 

The enforcement battle 

Like any famous mark, Intel suffers from counterfeiting and piracy worldwide – ranging from blatant copying of its products to dishonest repackaging where, for example, a processor is marked with a higher speed – to use of its name on products Intel doesn’t even make, such as modems. Gundelfinger has a staff of about 20 in the trademarks department “driven primarily by enforcement issues.” 

One of the more unusual threats to the logo is the mimicry of INTEL INSIDE: in several cases the company has taken action against other parties who have used the word “inside” as a trademark. Gundelfinger says offenders may not realize initially that they have done anything wrong, and that “a lot of people struggle with our position.” But she adds: “We are generally successful in persuading them that it is not a good idea.” 

Examples of cases where the company has blocked the use of “———- INSIDE” as a trademark include DIGITALL INSIDE which was registered for coin-operated apparatus and systems in the UK; CINEMA SOUND INSIDE and DIGITAL SERVO MASTER INSIDE, both registered by Thomson Multimedia as Community Trade Marks for audio and electronic goods; and IONISER INSIDE, which was canceled by a decision of the High Court in Delhi. 

The company has largely (though not always) been successful in enforcing its rights to INTEL INSIDE, because of the “massive secondary meaning” says Gundelfinger: “We don’t claim to own the word ‘inside’ but if you adopt the format as well as the word – well, we’re the only company that uses that format.” 

The IP backlash 

Since being elected INTA President in January, Gundelfinger has set up three presidential task forces – one on INTA publications, another on the purpose and structure of the annual Leadership Meeting and one on confronting anti-IP views. The last one in particular is an issue she follows closely. “What prompted it was that in the US and globally we’ve seen a lot of concern and backlash against globalization, the World Bank and large companies – and this has an IP element to it.” 

While much of this backlash has focused on other areas of IP, such as patented drugs and copyright on the Internet, Gundelfinger believes there is a “fuzziness” in attacks on IP: “I don’t want trademark owners to get tarnished inadvertently.” 

She adds: “In the US, there has been publicity over trademark owners filing actions against supposed fair use, and there are also concerns about free speech. It’s not clear to me that trademark owners have a problem, but I wanted the task force to spend some concentrated time on what is not a simple problem, and examine what we can do to maintain a good image with the public.” The task force will report by the end of this year. 

As well as setting up the task forces, Gundelfinger has been addressing the dilution issue, a key topic for trademark owners in the US since the Supreme Court’s Victoria’s Secret decision. In February she testified before the House Subcommittee on Courts, the Internet and Intellectual Property in favor of legislation to make dilution cases easier to prove while protecting free speech. “I really enjoyed it,” she says. “The venue was a little grander than I’m used to at Intel, and the setting is slightly intimidating. But the questioning was very thoughtful and polite. We had a very engaged discussion.” 

Asked what the big issues for trademark owners will be in the future, Gundelfinger says: “Counterfeiting. Counterfeiting. Counterfeiting,” and: “Clearance. Clearance. Clearance.” Globalization makes trademark clearance searching much harder, she adds: “Clearance is an issue that trademark owners and practitioners should start to address in a proactive way.” 

She emphasizes that globalization and technology have made counterfeiting easier and tackling it more difficult: “If you were a criminal looking for an attractive business model, would you choose drug dealing, bank robbery or counterfeiting?” The solution, she argues, is increasing penalties for counterfeiters while educating the public, lawmakers and judges about its impact on consumers and economies, as well as the connections with other illegal activities including terrorism. 

Intel itself has experienced counterfeiting all over the world. In terms of volume, says Gundelfinger, the company has suffered “in every developed market and the faster growing developing markets. We have no significant enforcement in Africa or the South Pacific islands but pretty much everywhere else.” In terms of severity, she picks out southeast Asia as the region where the threat from counterfeiting is greatest, while countries where the law is still developing, such as Russia, can be “very difficult to achieve results.” 

The globalization of commerce and law means that trademark owners have to learn about different cultures and systems, says Gundelfinger: “In short, today’s trademark lawyer must practice on a global level.” Alongside this challenge is the change in trademark law from being a niche area to one that is central to successful marketing: “I think trademark lawyers today deal with a lot more pressure from their clients to help address competitive realities – which has made our practice both more challenging and more interesting.”

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